Victory for Thom Browne in UK trade mark battle against adidas

In the judgment in Thom Browne Inc and Thom Browne UK Limited (Thom Browne) v adidas AG and adidas International Marketing B.V. (adidas) ) [2024] EWHC 2990 (Ch), which was handed down on 22 November 2024, the High Court of England and Wales decisively found in favour of the luxury fashion brand, Thom Browne, and its "Four-Bar Design" clothing, dismissing adidas' claims of trade mark infringement and passing off and finding that several of adidas' trade marks for three stripes on clothing were invalid.

Mrs Justice Joanna Smith DBE delivered a decisive judgment, noting that, "the average, reasonably observant, consumer paying a moderate degree of attention will generally perceive the difference between three stripes and four." The court also found that eight of the adidas trade marks asserted against Thom Browne failed to satisfy the absolute statutory requirements for clarity and precision, rendering them invalid.

Today's High Court decision follows Thom Browne's triumphs in the US and Germany, where the New York District Court and District Court of Nuremberg both agreed that Thom Browne does not infringe adidas' trade mark rights. The judgment will, no doubt, be welcomed by designers as confirming that adidas does not have an absolute legal monopoly on stripes. It also serves as a reminder that even apparently well-established trade marks have limits: if improperly registered or not put to genuine use, any trade mark may be vulnerable to invalidation or revocation.

The judgment also provides important and groundbreaking guidance on a range of emerging issues in trade mark law: in particular, the scope of protection afforded by "position" trade marks in the UK, the effect of a "crowded market" on the distinctiveness of a trade mark and the relevance of alleged confusion in the post-sale context.

Jeremy Hertzog, Partner at Mishcon de Reya and lead partner in this case, commented:

“This case has important implications for the scope of trade mark registrations – in particular, the emerging doctrine known as "position marks" – and appreciation of the distinct niches occupied by brands in the fashion sector. This judgment, following the successful defence by our client of related proceedings around the world, is a significant milestone in a dispute that has been long-running”.